37 C.F.R. 1.131
Affidavit or declaration of prior invention or to disqualify
commonly owned patent or published application as prior art.

(a)
When any claim of an
application or a patent under reexamination is rejected, the inventor of the
subject matter of the rejected claim, the owner of the patent under
reexamination, or the party qualified under § 1.42 or
§
1.46, may submit an appropriate oath or declaration to
establish invention of the subject matter of the rejected claim prior to the
effective date of the reference or activity on which the rejection is based.
The effective date of a U.S. patent, U.S. patent application publication, or
international application publication under PCT Article
21(2) is the earlier of its publication date or the date
that it is effective as a reference under 35 U.S.C.
102(e) as in effect on March 15, 2013. Prior invention
may not be established under this section in any country other than the United
States, a NAFTA country, or a WTO member country. Prior invention may not be
established under this section before December 8, 1993, in a NAFTA country
other than the United States, or before January 1, 1996, in a WTO member
country other than a NAFTA country. Prior invention may not be established
under this section if either:

(1)
The rejection is based upon
a U.S. patent or U.S. patent application publication of a pending or patented
application naming another inventor which claims interfering subject matter as
defined in § 41.203(a) of this title,
in which case an applicant may suggest an interference pursuant to
§ 41.202(a) of this title;
or

(2)
The rejection is based upon
a statutory bar.

(b)
The showing of facts for an
oath or declaration under paragraph (a) of this section shall be such, in
character and weight, as to establish reduction to practice prior to the
effective date of the reference, or conception of the invention prior to the
effective date of the reference coupled with due diligence from prior to said
date to a subsequent reduction to practice or to the filing of the application.
Original exhibits of drawings or records, or photocopies thereof, must
accompany and form part of the affidavit or declaration or their absence must
be satisfactorily explained.

*****

(c)
When any claim of an application or a
patent under reexamination is rejected under 35 U.S.C.
103 as in effect on March 15, 2013, on a U.S. patent or
U.S. patent application publication which is not prior art under
35 U.S.C. 102(b) as in effect on March 15, 2013, and the
inventions defined by the claims in the application or patent under
reexamination and by the claims in the patent or published application are not
identical but are not patentably distinct, and the inventions are owned by the
same party, the applicant or owner of the patent under reexamination may
disqualify the patent or patent application publication as prior art. The
patent or patent application publication can be disqualified as prior art by
submission of:

(2)
An oath or declaration stating
that the application or patent under reexamination and patent or
published application are currently owned by the same party, and that the
inventor named in the application or patent under reexamination is the
prior inventor under 35 U.S.C. 104 as in
effect on March 15, 2013.

(d)
The provisions of this section apply
to any application for patent, and to any patent issuing thereon, that
contains, or contained at any time:

(1)
A claim to an invention that has
an effective filing date as defined in 35 U.S.C.
100(i) that is before March 16, 2013;
or

(2)
A specific reference under
35 U.S.C. 120, 35 U.S.C.
121, or 365(c) to any patent or application that
contains, or contained at any time, a claim to an invention that has an
effective filing date as defined in 35 U.S.C.
100(i) that is before March 16,
2013.

(e)
In an application for patent to which
the provisions of § 1.130 apply, and to any
patent issuing thereon, the provisions of this section are applicable only with
respect to a rejection under 35 U.S.C. 102(g) as in
effect on March 15, 2013.

Under 37 CFR
1.131(a) which provides for the establishment of a date of completion
of the invention in a NAFTA or WTO member country, as well as in the United States, an
applicant can establish a date of completion in a NAFTA member country on or after December
8, 1993, the effective date of section 331 of Public Law 103-182, the North American Free
Trade Agreement Act, and can establish a date of completion in a WTO member country other
than a NAFTA member country on or after January 1, 1996, the effective date of section 531
of Public Law 103-465, the Uruguay Round Agreements Act (URAA). Acts occurring prior to the
effective dates of NAFTA or URAA may be relied upon to show completion of the invention;
however, a date of completion of the invention may not be established under
37 CFR
1.131(a) before December 8, 1993, in a NAFTA country or before
January 1, 1996, in a WTO country other than a NAFTA country, in applications subject to
pre-AIA 35 U.S.C.
104.

If a country joined the WTO after
January 1, 1996, the effective date for proving inventive activity in that country for the
purpose of pre-AIA 35 U.S.C. 104 and
37 CFR
1.131(a) is the date the country becomes a member of the WTO. See
MPEP §
213.01 for a list that includes WTO member
countries.

Any printed publication or activity
dated prior to an applicant’s or patent owner’s effective filing date, or any domestic
patent of prior filing date, which is in its disclosure pertinent to the claimed invention,
is available for use by the examiner as a reference in the rejection of the claims of the
application or patent under reexamination. In addition, patent application publications and
certain international application publications having an effective prior art date prior to
the application being examined may be used in a rejection of the claims. See
MPEP
§ 706.02(a) and § 21.6 -
§
2136.03.

Such a rejection may be overcome, in
certain instances noted below, by filing of an affidavit or declaration under
37 CFR
1.131(a), known as “swearing back” of the reference.

It should be kept in mind that it is the
rejection that is withdrawn and not the reference.

I.
SITUATIONS WHERE 37 CFR 1.131 AFFIDAVITS OR DECLARATIONS CAN BE
USED

(A)
To antedate a reference or
activity that qualifies as prior art under pre-AIA 35 U.S.C.
102(a) and not under pre-AIA 35 U.S.C.
102(b), e.g., where the prior art date under
pre-AIA 35 U.S.C. 102(a) of
the patent, the publication or activity used to reject the claim(s) is less
than 1 year prior to applicant’s or patent owner’s effective filing date. If
the prior art reference under pre-AIA 35 U.S.C.
102(a) is a U.S. patent or U.S. patent application
publication, the reference may not be antedated if it claims interfering
subject matter as defined in 37 CFR 41.203(a). See
MPEP § 715.05 for a discussion
of “interfering subject matter.”

(C)
During examination, to antedate an
activity that qualifies as prior art under pre-AIA 35 U.S.C. 102(g)
and not under pre-AIA 35 U.S.C. 102(b),
e.g., where the prior art date under pre-AIA 35 U.S.C. 102(g) of
the activity used to reject the claim(s) is less than 1 year prior to
applicant’s or patent owner’s effective filing date. If the evidence of the
activity under pre-AIA 35 U.S.C. 102(g) is
a U.S. patent or U.S. patent application publication, the evidence may not be
antedated if it claims interfering subject matter as defined in
37 CFR
41.203(a). See MPEP § 715.05 for a discussion
of
"interfering subject
matter"
.

(B)
Where the reference
publication date is more than 1 year prior to applicant’s or patent owner’s
effective filing date. Such a reference is a “statutory bar” under
pre-AIA 35 U.S.C. 102(b) as referenced in
37 CFR
1.131(a)(2). A reference that only qualifies as prior art
under pre-AIA
35 U.S.C. 102(a) or (e) is not a “statutory
bar.”

(C)
Where the reference U.S.
patent or U.S. patent application publication claims interfering subject matter
as defined in 37 CFR 41.203(a). See MPEP §
715.05 for a discussion of
"interfering subject matter"
and
MPEP Chapter 2300 . Where the
reference patent and the application or patent under reexamination are commonly
owned, and the inventions defined by the claims in the application or patent
under reexamination and by the claims in the patent are not identical but are
not patentably distinct, a terminal disclaimer and an affidavit or declaration
under 37 CFR 1.131(c) may be used
to overcome a rejection under 35 U.S.C.
103. See MPEP § 718.

(D)
Where the reference is a
foreign patent for the same invention to applicant or patent owner or his or
her legal representatives or assigns issued prior to the filing date of the
domestic application or patent on an application filed more than 12 months
prior to the filing date of the domestic application. See pre-AIA 35
U.S.C. 102(d).

(E)
Where the effective filing
date of applicant’s or patent owner’s parent application or an International
Convention proved filing date is prior to the effective date of the reference,
an affidavit or declaration under 37 CFR 1.131(a) is
unnecessary because the reference should not have been used. See
MPEP §§ 211 - 216 .

(F)
Where the reference is a
prior U.S. patent to the same entity, claiming the same invention. The question
involved is one of “double patenting.”

(G)
Where applicant has
clearly admitted on the record that
subject matter relied on in the reference is prior art. In this case, that
subject matter may be used as a basis for rejecting his or her claims and may
not be overcome by an affidavit or declaration under 37 CFR
1.131. In re Hellsund,
474 F.2d 1307, 177 USPQ 170 (CCPA 1973); In re
Garfinkel, 437 F.2d 1000, 168 USPQ 659 (CCPA 1971); In re Blout, 333 F.2d 928, 142 USPQ 173 (CCPA
1964); In re Lopresti, 333 F.2d 932, 142
USPQ 177 (CCPA 1964).

(I)
Where the subject matter
corresponding to a lost count in an interference is either prior art under
pre-AIA 35 U.S.C. 102(g) or
barred to applicant by the doctrine of interference estoppel. In re Bandel, 348 F.2d 563, 146 USPQ 389 (CCPA
1965); In re Kroekel, 803 F.2d 705, 231 USPQ
640 (Fed. Cir. 1986). See also In re
Deckler, 977 F.2d 1449, 24 USPQ2d 1448 (Fed. Cir. 1992) (Under the
principles of res judicata and collateral estoppel, applicant was not entitled to
claims that were patentably indistinguishable from the claim lost in
interference even though the subject matter of the lost count was not available
for use in an obviousness rejection under 35 U.S.C.
103). But see In re
Zletz, 893 F.2d 319, 13 USPQ2d 1320 (Fed. Cir. 1989) (A losing
party to an interference, on showing that the invention now claimed is not
“substantially the same” as that of the lost count, may employ the procedures
of 37 CFR 1.131(a) to antedate
the filing date of an interfering application). On the matter of when a “lost
count” in an interference constitutes prior art under pre-AIA 35
U.S.C. 102(g), see In re
McKellin, 529 F.2d 1342, 188 USPQ 428 (CCPA 1976) (A count is not
prior art under pre-AIA 35 U.S.C. 102(g) as
to the loser of an interference where the count was lost based on the winner’s
foreign priority date). Similarly, where one party in an interference wins a
count by establishing a date of invention in a NAFTA or WTO member country (see
pre-AIA 35 U.S.C. 104), the
subject matter of that count is unpatentable to the other party by the doctrine
of interference estoppel, even though it is not available as statutory prior
art under pre-AIA 35 U.S.C. 102(g). See
MPEP § 2138.01 and
§ 2138.02.

III.
REFERENCE DATE TO BE OVERCOME

The date to be overcome under
37 CFR
1.131(a) is the effective date of the reference (i.e., the date on
which the reference is available as prior art).

A.
U.S. Patents, U.S. Patent Application Publications, and
International Application Publications

The effective date of a domestic
patent when used as a reference in a rejection under pre-AIA 35 U.S.C.
102(e) is not the foreign filing date to which the application
for patent may have been entitled under 35 U.S.C. 119(a)
during examination. In re Hilmer, 359 F.2d 859,
149 USPQ 480 (CCPA 1966). Therefore, the date to be overcome under 37 CFR
1.131(a) is the effective U.S. filing date, not the foreign
priority date. When a U.S. patent or U.S. patent application publication reference is
entitled to claim the benefit of an earlier filed application, its effective filing
date is determined under pre-AIA 35 U.S.C. 102(e). See
MPEP
§ 706.02(a), § 706.02(f)(1), and
§
21.6 through § 2136.03.

B.
Foreign Patents

C.
Printed Publications

A printed publication, including a
published foreign patent application, is effective as of its publication date, not
its date of receipt by the publisher. For additional information regarding effective
dates of printed publications, see MPEP § 2128 through
§ 2128.02.

D.
Activities

An applicant may make an
admission, or submit evidence of use of the invention or knowledge of the invention
by others, or the examiner may have personal knowledge that the invention was used or
known by others in this country. See MPEP § 706.02(c) and
§
2133.03. The effective date of the activity used to reject
the claim(s) is the date the activity was first known to have
occurred.

FORM PARAGRAPHS

Form paragraphs
7.57.fti - 7.64.fti may be used to respond to
37 CFR
1.131(a) affidavits.

The [1] filed on [2] under
37 CFR
1.131(a) has been considered but is ineffective to overcome the
[3] reference.

Examiner Note:

1.
In bracket 1, insert either --affidavit-- or
--declaration--.

2.
This form paragraph must be followed by one or more
of form paragraphs 7.58.fti to 7.63.fti or a paragraph setting forth
proper basis for the insufficiency, such as failure to establish acts performed in this
country, or that the scope of the declaration or affidavit is not commensurate with the
scope of the claim(s).

The [1] reference is a
U.S. patent or U.S. patent application publication of a pending or patented application that
claims the rejected invention. An affidavit or declaration is inappropriate under
37 CFR
1.131(a) when the reference is claiming interfering subject matter as
defined in 37 CFR 41.203(a), see MPEP Chapter
2300.
If the reference and this application are not commonly owned, the reference can only be
overcome by establishing priority of invention through interference proceedings. See MPEP
Chapter 2300 for information on initiating interference proceedings. If the
reference and this application are commonly owned, the reference may be disqualified as prior
art by an affidavit or declaration under 37 CFR 1.131(c). See MPEP § 718.

Examiner Note:

1.
If used to respond to the
submission of an affidavit under 37 CFR 1.131(a), this paragraph must
be preceded by paragraph 7.57.fti.

2.
This form paragraph may be used
without form paragraph 7.57.fti when an affidavit has not yet been filed, and
the examiner desires to notify applicant that the submission of an affidavit under
37 CFR
1.131(a) would be inappropriate.

Examiner Note:

The evidence submitted is insufficient to establish a
conception of the invention prior to the effective date of the [1] reference.
While conception is the mental part of the inventive act, it must be capable of proof, such as
by demonstrative evidence or by a complete disclosure to another. Conception is more than a
vague idea of how to solve a problem. The requisite means themselves and their interaction
must also be comprehended. See Mergenthaler v. Scudder, 1897 C.D. 724, 81
O.G. 1417 (D.C. Cir. 1897). [2]

Examiner Note:

1.
This form paragraph must be preceded by form
paragraph 7.57.fti.

2.
An explanation of the deficiency in the showing of
conception must be presented in bracket 2.

3.
If the affidavit additionally fails to establish
either diligence or a subsequent reduction to practice, this form paragraph should be
followed by form paragraph 7.62.fti and/or 7.63.fti. If either diligence or a
reduction to practice is established, a statement to that effect should follow this
paragraph.

The evidence submitted is insufficient to establish
diligence from a date prior to the date of reduction to practice of the [1]
reference to either a constructive reduction to practice or an actual reduction to practice.
[2]

Examiner Note:

1.
This form paragraph must be preceded by form
paragraph 7.57.fti.

2.
If the affidavit additionally fails to establish
conception, this paragraph must also be preceded by form paragraph
7.61.fti.
If the affidavit establishes conception, a statement to that effect should be added to
this paragraph.

3.
If the affidavit additionally fails to establish an
alleged reduction to practice prior to the application filing date, this paragraph must
be followed by form paragraph 7.63.fti. If such an alleged reduction to practice is
established, a statement to that effect should be added to this
paragraph.

4.
An explanation of the reasons for a holding of
non-diligence must be provided in bracket 2.

5.
See MPEP §
715.07(a)
which
explains
that diligence is not required after reduction to practice.

The evidence submitted is insufficient to establish
applicant’s alleged actual reduction to practice of the invention in this country or a NAFTA
or WTO member country after the effective date of the [1] reference.
[2].

Examiner Note:

1.
This form paragraph must be preceded by form
paragraph 7.57.fti.

2.
If the alleged reduction to practice is prior to the
effective date of the reference, do not use this paragraph. See form paragraph
7.59.fti.

3.
If the affidavit additionally fails to establish
either conception or diligence, form paragraphs 7.61.fti and/or
7.62.fti
should precede this paragraph. If either conception or diligence is established, a
statement to that effect should be included after this paragraph.

4.
An explanation of the lack of showing of the alleged
reduction to practice must be given in bracket 2.